Date: 19990308
Dockets: T-1881-93
T-193-95
T-189-96
BETWEEN:
UNITED STATES POLO ASSOCIATION
Appellant
(Applicant)
- and -
POLO RALPH LAUREN CORPORATION
and THE REGISTRAR OF TRADE-MARKS
Respondent
(Opponent)
REASONS FOR ORDER
NADON J.:
[1] Before me are three appeals from decisions of the Trademark Opposition Board (the "Board") which allowed the respondent's oppositions and, hence, denied the appellant's applications to register its proposed trademarks.
[2] The decisions of the Board were rendered on May 31, 1993 (T-1881-93), November 30, 1994 (T-193-95) and November 22, 1995 (T-189-96).
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544,477
Court File T-189-96
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[3] In T-1881-93 and T-189-96, the Board concluded that the appellant had failed to demonstrate that its applied for trademarks were not confusing with the respondent's registered trademark POLO PLAYER DESIGN and, in T-193-95, with the respondent's registered trademark POLO.
The appellant's applied for trademarks are the following:
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552,667
Court File T-1881-93
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629,983
Court File T-193-95
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629,985
Court File T-193-95
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318,560
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The appellant's applied for trademarks were based on proposed use in Canada in association with the following wares:
"men's, women's and children's wearing apparel namely, pants, shirts, shorts, skirts, blouses, coats, T-shirts, jackets, sweaters and jogging wear namely, sweatshirts, sweat-pants, sweat-shorts and fleece-lined jackets"
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314,256 -
(Polo Player
Design)
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The Respondent's trademarks, which form the basis of the oppositions, are the following:
| POLO BY RALPH LAUREN
314,406
|
These appeals have been brought pursuant to subsection 56(1) of the Trademarks Act, R.S.C. 1985, c. C-13 (the "Act"). Subsection 56(5) of the Act provides that parties to such an appeal may, in addition to the evidence adduced before the Board, adduce further evidence before the Court and, as a result, the Court may exercise "any discretion vested in the registrar". In McDonald's Corp. v. Sylcorp. Ltd. (1989), 24 C.P.R. (3d) 207 at 210, Strayer J. (as he then was) explained as follows the role of the Court on appeals in opposition proceedings:
It seems clear that in opposition proceedings where the issue is essentially one of fact concerning confusion or distinctiveness the decision of the registrar or the Board represents a finding of fact and not the exercise of discretion. Therefore the court should not impose upon itself the same degree of restraint, in reviewing that discretion. It is thus free to review the facts to determine whether the decision of the registrar or Board was correct, but that decision should not be set aside lightly considering the expertise of those who regularly make such determinations: see Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp. (1968), 57 C.P.R. 1 at p. 8, 1 D.L.R. (3d) 462, [1969] S.C.R. 192">[1969] S.C.R. 192 at pp. 199-200 (S.C.C.). While different panels of the Federal Court of Appeal have variously expressed the duty of this court on appeal to be to determine whether the registrar has "clearly erred", or whether he has simply "gone wrong", it appear that it is the duty of a judge sitting on an appeal such as this to come to his own conclusion as to the correctness of the finding of the registrar. In doing that he must, however, take into account the special experience and knowledge of the registrar or the Board, and more importantly have regard to whether new evidence has been put before him that was not before the Board. ...
Mr. Justice Strayer's decision was appealed to the Federal Court of Appeal which dismissed the appeal. Stone J.A., for the Court, in McDonald's Corp. v. Silcorp. Ltd. (1992), 41 C.P.R. (3d) 67, at page 68, recognized the duty of the trial judge to determine the issues before him but also recognized that decisions of the Board should not be lightly disturbed.
We are not persuaded that Mr. Justice Strayer erred in any respect relative to the issues which were before him and which, in all material respects, upheld the decision of the board. In the circumstances, we are of the view that the principle laid down by the Supreme Court of Canada in Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp. (1968), 57 C.P.R. 1 at pp. 8-9, 1 D.L.R. (3d) 462, [1969] S.C.R. 192">[1969] S.C.R. 192, per Ritchie J., is particularly germane. He stated:
In my view the Registrar's decision on the question of whether or not a trade mark is confusing should be given great weight and the conclusion of an official whose daily task involves the reaching of conclusions on this and kindred matters under the Act should not be set aside lightly ...
While, as that case also indicates, the learned judge was not thereby relieved of the responsibility of determining the issues with regard to the circumstances of the case, in our view he properly discharged that responsibility.
In the present matters, the parties have adduced evidence which was not before the Board when it rendered the decisions now under appeal. I agree entirely with the comments made by Mr. Justice Strayer in McDonald's that I must come to my own conclusion with regard to the correctness of the Board's findings. In reaching my own conclusions, I must, however, bear in mind "the special experience and knowledge of the registrar or the Board", and consider, as I must, the new evidence which has been put before me. Consequently, it is my view that the appellant must show, in the light of all the evidence, that the Board's decisions are not "correct".
I now turn to the nature of the oppositions before the Board. The grounds for opposition in the three appeals are essentially the same and can be summarized as follows. Firstly, the applied for trademarks cannot be registered pursuant to paragraph 12(1)(d) of the Act because they are confusing with the respondent's trademarks. Secondly, the appellant is not a person entitled to registration pursuant to section 16 of the Act because, as of the appellant's filing date, the applied for trademarks were confusing with the respondent's registered trademarks, previously used in Canada by the respondent in association with articles of clothing and accessories. Thirdly, the applied for trademarks are not distinctive in view of the respondent's use of its marks and in view of use of certain marks by Triton Industries Inc.. The last ground of opposition is that the appellant's applications do not comply with provisions of section 30(e) of the Act.
I agree with the appellant that the grounds of opposition require a finding that there is a likelihood of confusion, within the meaning of section 6 of the Act, between the respondent's trademarks and those of the appellant, except for the ground that the applications do not meet the requirements of section 30(e), Intent to use. I agree with this statement bearing in mind that the onus is on the appellant to satisfy me that the Board's decisions are not "correct".
The facts relevant to all three appeals can be summarized as follows. The appellant is a not-for-profit corporation. It was incorporated for the purpose of promoting and regulating the sport of polo and of coordinating the activities of its members, polo players and its member clubs. Included in its activities, are rule making, safety for players and ponies, educating the public and sponsoring national and international polo games and tournaments. The appellant organization has been in existence since 1890 and it is the sole governing body of the sport of polo in the United States and Canada.
Polo tournaments in Canada have ben held since 1950 and approximately ten tournaments are organized every year with teams from both Canada and the United States competing. The public can attend these tournaments. Nine polo clubs in Canada are members of the appellant's organization with 93 individual members.
During the polo tournaments, the expressions and marks "U.S.P.A." and "UNITED STATES POLO ASSOCIATION" are prominently displayed and promoted. Further, the appellant distributes instructional materials and monthly newsletters to its individual members and member clubs in Canada.
In 1985, U.S.P.A. Properties Inc., a wholly owned subsidiary of the appellant, entered into a licence agreement with Triton Industries Inc. ("Triton"). Pursuant to the agreement, Triton was granted the exclusive right to use in Canada various names, symbols, emblems, designs and colours of the appellant in association with articles of clothing, including the applied for trademarks U.S. POLO ASS'N and U.S. POLO ASSOCIATION. This agreement was terminated in 1992 when Triton ceased to make its royalty payments.
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544,477
Court File T-189-96
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Triton promoted, sold and distributed to department stores and retail outlets across Canada, men's and women's clothing in association with the trademark U.S. POLO ASS'N to which were attached labels and hand tags bearing the trademark U.S. POLO ASS'N. Sales by Triton for the years 1989 to 1991 bearing the trademark U.S. POLO ASS'N were in the vicinity of 11 million dollars. Triton's retail customers included The Bay, Zellers, Woolworth, Eaton's, Price Club and Sears. No instances of confusion with the respondent's trademarks were reported.
In October 1992, the appellant sold three different styles of t-shirts, two of which featured a trademark with the words UNITED STATES POLO ASSOCIATION and POLO Indicia. In October 1992, the appellant also sold three different styles of t-shirts, two of which featured a trademark identical to the 544,477 trademark, the other t-shirt bearing a logo of a horse and polo rider with a mallet poised to hit a ball.
Clothing with the appellant's applied for trademarks U.S.P.A. and design (552,667) and U.S.Polo Association and Design (552,666) have never been sold in Canada. However, it would appear that the agreement entered into with Triton in 1985 gave Triton the right to use, inter alia, the two applied for trademarks in T-1881-93. However, as of February 27, 1992, when the agreement between Triton and the appellant was terminated, Triton had not used these trademarks in association with the sale of clothing to its customers in Canada.
| 
552,666
Court File T-1881-93
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552,667
Court File T-1881-93
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The respondent's business is the designing, manufacturing and marketing of exclusive high quality articles of clothing and accessories designed by or under the direction of Ralph Lauren, a world renowned fashion designer.
The respondent owns a family of trademarks that include the word "polo" or the representation of a mounted polo player. The respondent's trademarks which I have shown in paragraph 5 above are registered as follows:
| POLO BY RALPH LAUREN
314,406
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314,256
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318,560
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Since 1967, the respondent has used one or more of its trademarks in the United States in association with men's clothing and accessories, including ties, shirts, suits, coats, jackets, slacks, sweaters, scarfs and belts.
Between 1980 and 1987, sales of Polo clothing in the United States exceeded one billion dollars (U.S.) and during that period, the respondent spent over fifty million dollars (U.S.) advertising its clothing. The respondent's advertisement featured its trademarks and often featured the polo player design.
The polo trademarks have been used in Canada since 1976 in association with polo clothing. Always attached to the clothing are labels and hand tags which feature one or more of the polo trademarks. The polo player design is often embroidered on the clothing.
Between 1986 and 1990, sales of polo clothing in Canada exceeded 170 million dollars (Canadian). The clothing is always sold in Canada "through better quality men's wear stores and quality department stores including Hudson's Bay Company and Eaton's". Between 1986 and 1990, over 3.5 million dollars were spent in Canada advertising polo clothing. The advertisement, as in the case of U.S. advertisement, featured one or more of the polo trademarks and frequently the polo player design. The respondent's clothing is commonly referred to by the clothing trade and the public as POLO CLOTHING.
There can be no doubt that the respondent's trademarks have attained wide spread reputations in Canada and that they are well known to the Canadian clothing trade and the Canadian public.
The applicable law was correctly stated by Linden J.A. in United Artists Corp. v. Pink Panther Beauty Corp. et al. (1998), 225 N.R. 82, where he states at pages 87 to 90:
[11] The essential question in this case is whether the trial judge was correct in concluding that there was a likelihood that the appellant's mark would, in the mind of the average consumer, be confusing with the mark of the respondent. The law has been codified in s. 6 of the Trademarks Act which reads:
"6. (1) For the purposes of this Act, a trademark or trade-name is confusing with another trademark or trade-name if the use of the first mentioned trademark or trade-name would cause confusion with the last mentioned trademark or trade-name in the manner and circumstances described in this section.
"(2) The use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the wares or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
. . .
"(5) In determining whether trademarks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including
(a) the inherent distinctiveness of the trademarks or trade-names and the extent to which they have become known;
(b) the length of time the trademarks or trade-names have been in use;
(c) the nature of the wares, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trademarks or trade-names in appearance or sound or in the ideas suggested by them."
[12] In an application to the Registrar, the onus is on the applicant to show that there is no likelihood of confusion with the registered trademark in the mind of the average consumer. This onus is long established in England and in Canada under the Unfair Competition Act, 1932. Under the present legislation, Cattanach J. in Sunshine Biscuits, Inc. v. Corporate Foods Ltd., after reviewing the legal history, determined that the onus rests on the applicant not only before the Registrar, but also that the onus does not change by virtue of the commencement of opposition proceedings. He concluded:
"[In The Wool Bureau of Canada Ltd. v. Queenswear (Canada) Ltd. (1980), 47 C.P.R. (2d) 11] it was said that the onus upon an applicant for the registration of a trademark of proving that there is no likelihood of confusion within the meaning of s. 6(2) does not change by reason of the interpolation of opposition proceedings. Those proceedings are but another statutory step in the ultimate decision of the Registrar to register or not to register the trademark applied for. Thus it follows that the onus remains on the applicant for registration in opposition proceedings just as it was on the application to the Registrar."
I am in agreement with this principle.
[15] ... In other words, what the registered mark does nowadays is to ensure that the wares or services are the wares and services of a particular person and no one else, that is, the source of the goods is guaranteed.
[17] When deciding property issues it is always a matter of balancing the public right to competition with the private right to ownership. I do not find that this is limited to questions of intellectual property; an owner does not have unlimited rights with respect to personalty or reality. Consideration of the public interest is advanced through statute and through the common law (e.g. the tort of nuisance). When considering these types of questions the Court must be cognizant of the fact that the market relies on individuals who, through their labour and ingenuity, bolster the strength of our economy. That strength benefits us all. We must be careful when we determine property rights so that the line is drawn fairly between the right to the exclusive use of an idea and the right of individuals to compete and earn a livelihood. This dilemma is neatly summarized by Madame Justice McLachlin when she says:
"We must stop thinking of intellectual property as an absolute and start thinking of it as a function -as a process, which, if it is to be successful, must meet diverse aims: the assurance of a fair reward to creators and inventors and the encouragement of research and creativity, on the one hand; and on the other hand, the widest possible dissemination of the ideas and products of which the world, and all the individuals in it, have such great need."
[18] The scheme of the Act, consonant with a source theory of property rights, allows for the registration of trademarks in relation to the marketing of wares or services. Pursuant to s. 30 of the Act, the registrant of the mark must specify the wares or services in relation to which he or she is registering the mark. As well, s. 40 of the Act demands that the registration can only be effected when the mark itself has actually been used. A person may propose a mark for registration, but, until it has been used, the trademark cannot be registered. That "use" is a defined term in the Act and does not refer to a state of being in operation. Subsection 4(1) states the following:
"4. (1) A trademark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred."
What is important is that the trademark be associated in the minds of the public with the goods produced by the trademark owner. It is the association of a trademark with a particular source which is the key to understanding the rights protected by the Act.
[19] This notion of source in relation to the goods is also fundamental to the definition of "distinctive" set out in the Act. Section 2 defines that term in this way:
"2. . . . " "distinctive", in relation to a trademark, means a trademark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them."
Again, the Act makes clear that what is being protected is not the exclusive right to any mark that a person might think of, but the exclusive right to use it in association with certain products or services. Where there is no use of the mark, or where the consumer is unable to rely on the mark to distinguish one person's products or services from another person's products or services, then no protection is warranted. In Western Clock Co. v. Oris Watch Co., Audette J. of the Exchequer Court made this comment:
"Distinctiveness is of the very essence and is the cardinal requirement of a trademark, which is used to distinguish the goods of a trader from the goods of all other traders."
[20] The rights conferred by registration of a trademark are spelled out in ss. 19 and 20 of the Act. These deal with actual infringement and deemed infringement. The right of exclusive use of the trademark granted by s. 19 is valid only with respect to the wares and services stated in the registration. Section 20 of the Act prohibits the use of trademarks which are confusingly similar to registered trademarks, and their use is deemed to be an infringement. The question of confusion refers us back to s. 6 of the Act.
[21] A trademark is a mark used by a person to distinguish his or her wares or services from those of others. The mark, therefore, cannot be considered in isolation, but only in connection with those wares or services. This is evident from the wording of s. 6(2). The question posed by that subsection does not concern the confusion of marks, but the confusion of goods or services from one source as being from another source. It is for this reason that marks which rely on geographic origins or generally descriptive words (e.g. the fictional marks Pacific Coffee or Premium Soda) are not afforded a wide ambit of protection. Even though proposed marks might be similar to them, the public is not likely to assume that two products that describe themselves as being "Pacific" or "Premium" necessarily originate from the same source. Because confusion is not likely, protection is not necessary.
Linden J.A.then goes on to discuss specifically the items listed in subsection 6(5) of the Act. His discussion is thorough and I hereby adopt it.
[22] This concentration on the source of the wares or services must inform any consideration of s. 6 of the Act. Six factors are enumerated: five specific and one general one. I shall briefly discuss each one of them in turn. The five specific considerations that must be considered indicate that the Court must balance the right of the trademark owner to the exclusive use of his or her mark, with the right of others in the marketplace to compete freely.
(a) the inherent distinctiveness of the trademarks or trade-names and the extent to which they have become known
[23] The first item listed under s. 6(5) is the strength of the mark. This is broken down into two considerations: the inherent distinctiveness of the mark, and the acquired distinctiveness of the mark. Marks are inherently distinctive when nothing about them refers the consumer to a multitude of sources. Where a mark may refer to many things or, as noted earlier, is only descriptive of the wares or of their geographic origin, less protection will be afforded the mark. Conversely, where the mark is a unique or invented name, such that it could refer to only one thing, it will be extended a greater scope of protection.
[24] Where a mark does not have inherent distinctiveness it may still acquire distinctiveness through continual use in the marketplace. To establish this acquired distinctiveness, it must be shown that the mark has become known to consumers as originating from one particular source. In Cartier Inc. v. Cartier Optical Ltd./Lunettes Cartier Ltée, Dubé J. found that the Cartier name, being merely a surname, had little inherent distinctiveness, but, nevertheless, it had acquired a great deal of distinctiveness through publicity. Likewise in Coca-Cola Ltd. v. Fisher Trading Co., the Judge found that the word "Cola" in script form had become so famous that it had acquired a very special secondary meaning distinctive of the beverage, and was, therefore, worthy of protection.
(b) length of time in use
[25] The length of time that a mark has been used is obviously a factor which will contribute to confusion on behalf of the consumer in determining the origin of wares or services. A mark that has been in use a long time, versus one newly arrived on the scene, is presumed to have made a certain impression which must be given some weight. It is important to remember that "use" is a term defined by the Act and, therefore, has a special meaning.
(c) nature of the wares, services or business
[26] Clearly, where trademarks are similar, the degree to which the wares or services which bear those marks are similar will be a large factor in determining whether confusion is likely to result. Similarity in wares or services cannot be a sine qua non in a determination of confusion, as s. 6(2) dictates that confusion may result "whether or not the wares or services are of the same general class." However, the ultimate test is confusion, and where one product does not suggest the other it will be a strong indication that confusion is unlikely. The nature of the wares, services and business, therefore, though not always controlling, are certainly of significance. This becomes clear in the discussion of famous trademarks, infra.
[27] The relevant factors under this heading will include not only the general class of goods that are involved, but also the quality and price of those goods. The consideration of price stems from the assumption that a consumer will be more careful when purchasing an expensive item, such as an automobile, than where inexpensive goods are concerned. In the former case, there is less likelihood of confusion even in the case of identical marks because a shopper will be assumed to undertake a judicious inquiry of the wares or service that he or she is purchasing, and not rely simply upon the hasty impression of a trademark or trade-name. With less expensive goods or services, more reliance may be placed on those marks and less care taken to ensure that the product is truly from the source which the consumer expects.
[28] In Oshawa Holdings Ltd. v. Fjord Pacific Marine Industries Ltd. this court considered the possibility of confusion in the case of identical trademarks, namely DUTCH BOY. The appellant used the mark in relation to a supermarket business as well as two dairy product items. The respondent used the mark in association with pickled herring. Finding that the businesses and wares dealt with by the parties were substantially different, Heald J.A. concluded:
It is my opinion, accordingly, that an ordinary member of the public would not likely infer that the appellant's wares and the respondent's wares were produced or marketed by the same company.
Justice Heald came to this conclusion despite the fact that the wares were in the same general class, i.e. food products and services.
[29] On the other hand, in Cartier, supra, Dubé J. used a different analytic strategy in his assessment of the wares provided by the parties and the effect that had on the likelihood of confusion. After reviewing the evidence and finding that Cartier's clients were newly affluent and upwardly mobile, while Lunettes Cartier had upgraded its publicity to compete with more sophisticated distributors, he stated:
Thus, the wares sold by both parties are now within the same range of luxury eyeglass frames and are appealing to the same clientele, although the plaintiff Cartier carries a more expensive line.
In making this decision, Dubé J. placed emphasis on the customers purchasing the wares, rather than on the nature of the wares themselves. This cannot be seen as an error in interpreting the factor as stated in the legislation, because the ultimate test involves gauging the impression made by the marks on the consumer. What it does display is the difficulty inherent in developing any definitive, fool-proof approach to the concept of confusion.
(d) nature of trade
[30] Similar to the nature of the wares or services is the consideration of the nature of the trade in which those wares or services circulate. The risk of confusion is greater where the wares or services, though dissimilar, are distributed in the same types of stores or are of the same general category of goods. For example, if both items are in the general category of household products and are sold in similar places, then confusion is more likely. However, where one mark refers to household products and the other to automotive products, and they are distributed in different types of shops, there is less likelihood that consumers will mistake one mark for the other.
[31] The nature of the trade extends the analysis to the type of trading environment as well. Where one product is traded on a wholesale level and the other through retail outlets, this must be taken into consideration. This relates both to the environment and to the nature of the consumer. A professional consumer purchasing at the wholesale level is less likely to be confused than a casual shopper in a retail setting. In Can. Wire & Cable Ltd. v. Heatex Howden Inc., the applicant applied to register the mark HEATEX for building wire for electrical circuits. The opponent was the registered owner of the identical mark in relation to the sale of industrial heat transfer products. Associate Chief Justice Jerome concluded that consumers were not likely to be confused by the identical marks. He stated:
. . . these products are dissimilar. I would expect the average consumer of them to come to the same conclusion. To some extent I rely on the fact that the consumers of both these products are, in the great majority, industrial users. I imply from that that they are somewhat knowledgeable when they are going into the market for the acquisition of materials which will find their way into their construction projects on the one hand, and find their way into major industrial automotive products on the other.
Despite the fact that the marks were identical, no likelihood of confusion was found due to the dissimilarity in the products and the nature of the trade.
[32] In Clorox Co. v. E.I. Du Pont de Nemours and Co. the appellant opposed an application by the respondent to register the trademark IMPACT. The respondent's proposed use of the mark would be in association with an insecticide. The appellant used the same mark in association with chemicals for treating swimming pool and spa water and alleged a likelihood of confusion. Heald D.J. acknowledged that, while Du Pont did not distribute its product on the retail level, whereas the Chlorox product was traded in a retail setting, there was a likelihood that the products might be sold in the same channels of trade. The question that must be answered, therefore, was not whether the parties sold their products in the same channels, but whether they were entitled to do so.
[33] In Seagram (Joseph E.) & Sons Ltd. v. Register of Trademarks and Seagram Real Estate Ltd., MacKay J. commented that the nature of the trade included "the customs and usages of the trade and the character of the markets where the marks are intended to serve their purposes." Thus, the nature of the trade is a factor which comprises many different considerations. The totality of the circumstances will dictate how each consideration should be treated.
(e) similarity in appearance, sound and idea suggested
[34] Obviously, where the marks are identical this analysis is not needed. But where the marks are similar, the Registrar or the Court must assess the likely impression made by the marks on the public. While the marks must be assessed in their entirety (and not dissected for minute examination), it is still possible to focus on particular features of the mark that may have a determinative influence on the public's perception of it. In Ikea Ltd./Ikea Ltée v. Idea Design Ltd., Dubé J. found that, while the marks IKEA and IDEA were similar phonetically, there was nevertheless no likelihood of confusion. He stated:
Only one letter in each name is different, but the letter "K" in IKEA comes out strikingly and gives the mark a very strong Scandinavian flavour, whereas the mark IDEA evokes mostly a concept, or a thought.
[35] In contrast to that situation, the trademarks FRESCOBALDI and FRESCO ROSSO were found to be confusing in Frescobaldi et al. v. T.G. Bright & Co.. Chairman Partington found that the ideas suggested by the two marks were different, but that the similarity in appearance would contribute to confusion. These cases highlight the fact-specific nature of the question to be answered under subsection 6(5) in general. In both Ikea Ltd. and Frescobaldi, the nature of the wares and services, as well as the nature of the trade, were identical. In both cases one mark was long used and the other was newly proposed or little used. The registered marks were both very well known. But different conclusions won the day in each case. In one, the striking nature of the "k" in IKEA, giving it a distinctively Scandinavian quality, was crucial. In the other, the general similarity between the two marks was underscored. The decided cases, therefore, give little guidance here.
(f) all the surrounding circumstances
[36] The overriding, general consideration is "all the surrounding circumstances." This obviously includes the specific factors listed above, but allows the Judge or the Registrar the flexibility to take account of any fact peculiar to the situation at hand. In many cases the five factors explicitly enumerated will comprise "all the surrounding circumstances." In particular cases there may, for example, be a history of competition between the marks without resulting in any confusion. Of course, any evidence of actual confusion will always be relevant. As well, survey evidence may be entered where it has been conducted in an objective manner, so that the results have some probative value.
[37] One important circumstance is the presentation of the trademark in the context of the product itself. The "get-up", or the way that a product is packaged, and as a consequence the way the mark is presented to the public, is an important factor in determining whether confusion is likely. In Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd. the plaintiff used the trademark STINGSILDA in association with fishing lures. It used a distinctive package and get-up for its product. The trial judge found that a similar type of get-up contributed greatly to the likelihood of confusion between that mark and the defendant's NORSE SILDA mark. He found this to be a relevant surrounding circumstance under s. 6(5).
[38] Where the surrounding circumstances are also important is in determining how much weight each of the enumerated factors should be given. In Polysar Ltd. v. Gesco Distributing Ltd., Joyal J. considered the question of the flexibility given to the court or the Registrar in assessing the significance of each factor listed under s. 6(5). He stated:
Of particular relevance to the criteria outlined in s-s. 6(5) of the statute is the principle that they need not be interpreted as having equal weight. Each particular case of confusion might justify greater significance being given to one criteria than to others.
Thus, in each particular set of circumstances, the court or the Registrar must be aware that the significance of these factors must be gauged anew.
In Beverley Bedding & Upholstery Co. v. Regal Bedding & Upholstery Ltd., 47 C.P.R. (2d) 145, Cattanach J., in addressing the issue of confusion, made the following comments at pages 148 and 149:
By virtue of s-s. 6(5) in determining if trade marks are confusing, regard shall be had to all surrounding circumstances but it is also mandatory that particular regard shall be had to the factors mentioned in paras. (a) to (e) which are eight in number.
In my view the use of the word "including" in the context of s- s. 6(5) merely specifies particular things already included in the general words theretofore used and is not to be construed as an englargement of these words.
It is axiomatic that all these factors are not of necessity to be accorded equal weight and in some instances one or more of the factors mentioned might not even be present. Realistically appraised it is the degree of resemblance between trade marks in appearance, sound or in ideas suggested by them that is the most crucial factor, in most instances, and is the dominant factor and other factors play a subservient role in the over-all surrounding circumstances.
I agree with the view taken by Linden J.A. in Pink Panther that the registrar and a judge must consider, in reaching a conclusion regarding confusion, "all the surrounding circumstances". These circumstances obviously include the circumstances enumerated in paragraphs 6(5)(a) through (e) and all other relevant circumstances. I also agree with the view taken by Cattanach J. in Beverley Bedding that, in most cases, the degree of resemblance between trademarks in appearance, sound or in ideas suggested by them will be the most crucial factor. I believe this to be the case in the present appeals.
In my view, the test of first impression and imperfect recollection is the relevant test to be applied in determining whether the appellant's marks are likely to cause confusion with the respondent's marks. In Miss Universe, Inc. v. Bohna, [1995] 1 F.C. 614, at 621 and 622, Decary J.A., for the Federal Court of Appeal, makes it clear that this is the applicable test:
To decide whether the use of a trade-mark or of a trade-name causes confusion with another trade-mark or another trade-name, the Court must ask itself whether, as a matter of first impression on the minds of an ordinary person having a vague recollection of that other mark or name, the use of both marks or names in the same area in the same manner is likely to lead to the inference that the services associated with those marks or names are performed by the same person, whether or not the services are of the same general class.
I will now address the "surrounding circumstances" which are enumerated in paragraphs 6(5)a) through e) of the Act. The paragraphs read as follows:
| 6. (5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including
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(5) En décidant si des marques de commerce ou des noms commerciaux créent de la confusion, le tribunal ou le registraire, selon le cas, tient compte de toutes les circonstances de l'espèce, y compris_:
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| (a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
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a) le caractère distinctif inhérent des marques de commerce ou noms commerciaux, et la mesure dans laquelle ils sont devenus connus;
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| (b) the length of time the trade-marks or trade-names have been in use;
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b) la période pendant laquelle les marques de commerce ou noms commerciaux ont été en usage;
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| (c) the nature of the wares, services or business;
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c) le genre de marchandises, services ou entreprises;
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| (d) the nature of the trade; and
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d) la nature du commerce;
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| (e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.
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e) le degré de ressemblance entre les marques de commerce ou les noms commerciaux dans la présentation ou le son, ou dans les idées qu'ils suggèrent.
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(a) With respect to the inherent distinctiveness of the marks and the extent to which they have become known:
In T-189-96 and T-1881-93, the Board found both the applicant's and the respondent's trademarks to be inherently distinctive. However, the Board found that there was no evidence that the applied for trademarks had acquired any reputation in Canada. In T-1881-93, the Board found that the respondent's trademark "POLO PLAYER DESIGN" had become known in Canada in association with men's clothing. In T-189-96, the Board found that the respondent's trademarks "POLO PLAYER DESIGN" and "POLO" had become known in Canada in association with men's clothing.
In T-193-95, the Board concluded that the applicant's and the respondent's trademarks were weak. However, the Board found that the respondent's trademark "POLO" had become known throughout Canada.
In my view, the Board made no error when it found in T-189-96 and T-1881-93 that the respondent's marks were inherently distinctive. The evidence before the Board and before this Court is, in my view, clear that the respondent has extensively used and promoted its POLO PLAYER DESIGN and POLO trademarks. Even if I were to accept the appellant's argument that the respondent's trademarks are not inherently distinctive, they have, in my view, acquired distinctiveness through extensive use by the respondent. Consequently, the Board's findings in T-1881-93 and T-189-96 that the POLO PLAYER DESIGN and POLO trademarks are inherently distinctive is, in my view, correct. I also agree with the Board that the applicant's marks have not acquired any reputation in Canada.
In T-193-95, the Board found the trademark "POLO" to be inherently weak but that it had become well-known throughout Canada. Again, I see no error on the Board's part since the evidence shows without doubt that the mark "POLO" has acquired distinctiveness through extensive use in Canada. I am also of the view, as was the Board, that the appellant's marks have not acquired any reputation in Canada.
(b) The length of time the trademarks have been in use:
In all three files, the Board concluded that the length of time the marks had been in use favoured the respondent. In my view, that finding, notwithstanding the evidence adduced in these appeals, is unassailable. I agree entirely with the Board that the length of time the marks have been in use favours the respondent.
(c) The nature of the wares and the nature of the trade:
In the three files, the Board concluded that the wares of the appellant and those of the respondent overlapped and that "presumably their trades could also overlap". The applied for marks, as per the applications, are to be used in association with men's, women's and children's clothing. The respondent's trademarks are registered to be used and are used in association with articles of clothing.
The respondent's wares are "designer clothing" and are, no doubt, more "upscale" than the wares of the appellant. However, as counsel for the respondent correctly points out, there are no restrictions as to trade or price in either of the parties' statement of wares. All that can be said for the time being is that the parties do not compete. In Miss Universe Inc., Decary J.A., at page 625, explains that the wares and trade need not necessarily be the same for confusion to arise. He puts it as follows:
For a likelihood of confusion to be found, it is not necessary that the parties operate in the same general field or industry, or that the services be of the same type or quality. Trade-marks for wares and services of one quality intended for one class of purchasers may be confusing with trade-marks for wares and services of a different type or quality, intended for a different class of purchasers.
(e) The degree of resemblance between the trademarks in appearance or sound or in the idea suggested by them:
In T-1881-93, the Board found that the marks "bear a high degree of visual resemblance". In T-189-96 and T-193-95, the Board found that the marks bear "some degree of visual resemblance". In the three files, the Board concluded that the ideas suggested by the marks were similar.
In T-1881-93, the Board explains its finding of visual resemblance as follows:
... The dominant feature of each of the applicant's marks is a representation of a polo player on a horse. The opponent's mark [the POLO PLAYER DESIGN] in its entirety is also a representation of a polo player on a horse. Thus, the ideas suggested by the two marks are also very similar. There may be a difference between the way the marks at issue are sounded although that point is not entirely clear since it may be that consumers would aurally identify each of the applicant's marks as "polo", "polo player" or the like rather than as USPA, initials having limited inherent distinctiveness.
In the decision rendered in T-189-96, the Board there explains its finding as follows:
... In this respect, both the applied for mark and the opponent's mark POLO PLAYER DESIGN include a depiction of a horse and a polo mallet (two mallets in the applied for mark) as prominent design features. Further, the applied for mark includes the entirety of the opponent's mark POLO. The ideas suggested by the applied for mark and the opponent's registered marks POLO and POLO PLAYER DESIGN are similar namely, the sport of polo. It is also likely that consumers would incorporate the word "polo" in describing the design marks in issue.
Finally, in T-193-95, the Board concluded that the appellant had adopted the totality of the respondent's trademark POLO as the dominant feature of its applied for marks U.S. POLO ASSOCIATION and U.S. POLO ASS'N. The Board also held that the competing marks all suggested the same idea, i.e. the game of polo.
With respect to the Board's decision in T-189-93, I agree with the view put forward by the appellant that its applied for marks and those of the respondent are not similar other than the common element of the word "Polo" in its 544,477 mark and some of the respondent's marks. The 544,478 mark is made up of the initials "U.S.P.A." to which is added the depiction of a horse, two mallets and a polo cap. In my view, the appellant's marks are not similar to the respondent's marks. Although both the appellant's and the respondent's marks suggest the idea of the sport of polo, the appellant's marks suggests an affiliation with a polo club, the United States Polo Association. The respondent's marks do not suggest an affiliation with a polo club but with clothing designed by Ralph Lauren. The appellant's marks do not, in my opinion, bear any resemblance to those of the respondent.
In T-193-95, I am also of the view that the appellant's marks U.S. POLO ASSOCIATION (629,983) and U.S. POLO ASS'N (629,985) are not similar to those of the respondent. Both the appellant's and the respondent's marks suggest the idea of the sport of polo. Clearly, the idea suggested by the appellant's marks is that of an affiliation with a polo club, the United States Polo Association. The respondent's marks do not suggest the same idea, rather they suggest an affiliation with clothing designed by Ralph Lauren. As in T-189-93, the word "polo" is the common element between the applied for marks and those of the respondent. The appellant's marks do not, in my opinion, bear any resemblance to those of the respondent.
With respect to the Board's decision in T-1881-93, I agree with the Board that the idea suggested by the appellant's applied for marks 552,666 and 552,667 are very similar. The marks also bear a high degree of visual resemblance in that they depict a polo player on a horse.
Conclusions:
In T-1881-93, I have come to the conclusion that, having regard to all the surrounding circumstances, the appellant has not met its burden of showing that there is no likelihood of confusion. Consequently, the appellant has not shown that the Board erred in reaching the conclusion that it did.
However, in T-189-96 and T-193-95, I am of the view that the Board's decisions cannot stand. As I indicated earlier, there is no visual resemblance between the appellant's and the respondent's marks and the common thread between the marks is the word "polo". That word is an ordinary English and French word. "Polo" is a sport and a type of collar on a shirt used in the sport of polo. In my view, the respondent cannot appropriate the word "polo" for its own use to the detriment of other traders.
In my view, the ordinary person, or rather the average consumer, would not, and will not, be confused by the appellant's marks and thus led to believe that the appellant's wares are those of the respondent. In my view, the average consumer would distinguish without difficulty the appellant's marks from those of the respondent. When considered as a whole, the appellant's marks are not likely to lead to any confusion. Although the word "polo" is common, the marks do not suggest the same ideas. Those of the appellant suggest the sport of polo and, more particularly, the sport of polo in relation to the United States Polo Association. The respondent's marks do not make such a suggestion. Rather they suggest clothing designed by a world famous designer, Ralph Lauren. Counsel for the appellant argued that the respondent's marks were so well known that they could not possibly be confused with the appellant's marks. I agree. I have to assume that, when the respondent chose the word "polo", it knew that there was a sport of polo and that the word was also used to describe a type of collar on a shirt. The respondent could not expect that the word "polo" would thereafter be taken out of circulation because it had decided to choose it. In this regard, the words of Lord Simonds, speaking for the House of Lords in Office Cleaning Services, Ld. v. Westminster Window and General Cleaners, Ld., (1946) 63 C.P.C. 39 are relevant. At page 43, Lord Simonds makes the following point:
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